Mark D. Selwyn

Selwyn has been the co-chair of his law firm’s intellectual property litigation practice group for more than a decade, handling patent litigation in many forums in the U.S. Especially in the last couple of years, his work has expanded worldwide.

There’s a good reason for that. “IP issues don’t magically stop at the border,” he said. “Everything is so interconnected now that you really need to think globally in planning your IP strategy both defensively and offensively.”

One excellent example is litigation launched last year between his client Apple Inc. and Ericsson Inc. over the fraught issue of standard essential patents. The two parties brought litigation in Texas, the ITC, Belgium, Brazil, the Netherlands, and Germany in what some have said could become one of the largest patent fights of 2022.

Selwyn won’t comment on the pending matters except to acknowledge that he is managing the global matters and helping lead the U.S. cases.

He also is representing Apple in several other high-profile matters. One deals with accusations by fintech company Universal Secure Registry that the Apple Pay app infringes many of its patents. It brought litigation in Texas and the Patent Office, but last August the Federal Circuit issued a precedential opinion affirming that all the patents are invalid. Universal Secure Registry v. Apple Inc., 10 F.4th 1342 (Fed. Circ., Aug. 6, 2021).

The decision concludes three separate cases, all of which Selwyn argued on the same day, from his dining room.

He had somewhat good news for Apple that same August in another case. A jury there had found against his client in an infringement case over cellular LTE patents. The judge ordered damages retried, which a new jury set at $300 million rather than the potentially billions of dollars of the previous verdict. Optis Wireless Technology LLC v. Apple Inc., 2:19-cv-00066 (E.D. Tex., filed Feb. 25, 2019).

In a fascinating and important case for patent litigators, Selwyn is representing Apple, Cico and Intel against the director of the Patent Office over what’s called the NHK-Fintiv Rule, which lets the PTAB decline a case if other litigation is pending on the same patents.

Selwyn said the PTAB has used the rule “as a basis to deny institution of otherwise meritorious challenges to patents.” The case is now on appeal, and Selwyn will argue for the plaintiffs. Apple Inc. v Iancu, 2022-1249 (Fed.Cir., filed Dec. 10, 2021).

In a very different appeal, he represents a group of American history scholars as an amicus in the U.S. Supreme Court’s pending Second Amendment case. New York State Rifle & Pistol Association Inc. v. Bruen, 20-843 (U.S., filed Dec. 17, 2020).

“I think it’s very important the court understands the historical roots of the regulation of guns both in Britain and the U.S. that help to inform the regulations around certain types of weaponry,” Selwyn said.

– Don DeBenedictis